- Pharaoh Energy Services, LLC v. Flex-Chem Holding Company, LLC, And Flex-Chem Services CorporationInstitution deniedPTAB · Sep 20, 2024 · IPR2024-00822 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5‒6. “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. There is some overlap among these factors and some facts may be relevant to more than one factor. Id. In evaluating the factors, the Board takes a holistic view of whether the efficiency and integrity of the system are best served by denying or instituting review. Id.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“from his Declaration cited on page 17 of the Petition, however, Dr. Harwell essentially repeats verbatim the conclusions from the Petition quoted above: 98. As such, Ayers discloses that subterraneous formations of metal-polymer complexes may result due to previous injections of fracturing fluid. For example, fracturing fluid containing polyacrylamide, a common polymer additive to fracturing fluid, may intrude the natural formation and have negative interactions in the way of forming a metal-polymer complex with metal ions naturally present in the formation. Harwell Decl. ¶ 98, cited at Pet. 17. Dr. Harwell provides no additional scientific or technical basis for these conclusory restatements of Petitioner’s assertions, and we find Dr. Harwell’s testimony on this issue entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15– 17 (PTAB Aug. 24, 2022) (precedential) (denying institution and determining that testimony of a declarant that merely repeats, verbatim, conclusory assertions from a petition, without citing additional supporting evidence or providing technical reasoning to support the testimony, is entitled to little weight), cited at Prelim. Resp. 31 (arguing that paragraph 98 of the Harwell Declaration “repeats the Petition essentially verbatim and fails to provide any further evidence or explanation on how Ayers discloses (or even suggests) the claimed subject matter”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also view Petitioner’s and Dr. Harwell’s conclusions as lacking because they fail to demonstrate that a “subterranean-formed metal-polymer complex” would necessarily have been present in Ayers’s subterranean formations. Instead, as noted by Patent Owner, both Petitioner and Dr. Harwell can muster only that “subterraneous formations of metal-polymer complexes may result due to previous injections of fracturing fluid” and that “fracturing fluid containing polyacrylamide . . . may intrude the natural formation and have negative interactions in the way of forming a metal-polymer complex . . . .” Pet. 17; Harwell Decl. ¶ 98 (emphasis added); see Prelim. Resp. 31–32 (presenting this argument). Even assuming these statements to be accurate, and even if the statements are unrebutted at trial, they are not sufficient on the record here to demonstrate compelling merits of anticipation. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)) (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”).9” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner states—without any supporting evidence—that Patent Owner (assumedly in the Parallel Litigation) has described a person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the [challenged p]atent [as having] at least a bachelor’s degree in chemistry, chemical engineering, petroleum engineering, geology, or the equivalent, and at least two years of experience in oil and natural gas well treatments, or an equivalent amount of relevant work and/or educational experience. Pet. 5. Petitioner “is prepared to adopt” this definition for this proceeding. Id. Patent Owner “adopts” Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record in this proceeding, including the prior art. Prelim. Resp. 10–11; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt, and apply below, the definition proposed by Petitioner.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not propose constructions for any claim terms. See Pet. 11–12. In response, Patent Owner “agrees to accept the construction for any claim terms from the [challenged] patent it presented in district court . . . [,] none of which require a construction different from the plain import of the claim language itself.” Prelim. Resp. 12. Based on the current record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,697,282 - Pharaoh Energy Services, LLC v. Flex-Chem Holding Company, LLC, And Flex-Chem Services CorporationInstitution deniedPTAB · Sep 20, 2024 · IPR2024-00815 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution of review of claims 1–13 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“currently scheduled to begin on January 14, 2025. Prelim. Resp. 55 (citing Ex. 2003 (Specialized Scheduling Order in the Parallel Litigation) at 2). Based on the date of issuance of this Decision, the beginning of the trial in the Parallel Litigation is over eight months before any final decision would have been due had inter partes review been instituted. This large length of time from the trial in the Parallel Litigation to the due date of the final decision in this proceeding weighs strongly in favor of discretionary denial. As stated in the Guidance Memo, “when considering the proximity of the district court’s trial date to the date when the PTAB final written decision will be due, the PTAB will consider the median time from filing to disposition of the civil trial for the district in which the parallel litigation resides.” Guidance Memo 3. Patent Owner provides median time-to-trial statistics for the Oklahoma District Court, which predict a trial date approximately 26.9 months after the Parallel Litigation’s filing date of April 13, 2023. See Prelim. Resp. 56 (citing Ex. 2005 at 2). Because the predicted trial date—approximately July 17, 2025—still precedes by two months the due date of any final decision had inter partes review been instituted, the statistics provided also weigh in favor of denial of institution. Given the proximity of the current trial date—less than four months from the date of this Decision—and the lack of any indication from the parties that the trial date will not hold or that either party seeks a later trial date, we view this factor as strongly favoring discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“in which the evidence, if unrebutted in trial,” show it is “highly likely that the petitioner would prevail with respect to at least one challenged claim.” Guidance Memo 4; OpenSky, Paper 102 at 49. For the reasons above, Petitioner’s arguments and evidence do not satisfy the “compelling merits” standard as to any ground presented. D. Overall Balancing of the Fintiv Factors We have considered the circumstances and facts before us in view of the Fintiv factors. As discussed above, we have determined that the first five Fintiv factors overall weigh in favor of discretionary denial of institution. Moreover, we have further determined that the Petition does not show compelling merits under the sixth Fintiv factor. We therefore conclude that the evidence of record favors exercising our discretion to deny institution. III. CONCLUSION For the reasons above, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. IV. ORDER Accordingly, it is hereby: ORDERED that the Petition is denied as to all challenged claims, and no inter partes review is instituted.” slip op. at 29
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Harwell Decl. ¶¶ 167–169); see also Prelim. Resp. 28–29 (presenting this argument). In the three relevant paragraphs from his Declaration cited on page 18 of the Petition, Dr. Harwell, however, merely restates, word for word, two disclosures from Frenier8 quoted from the same page of the Petition, and contends (essentially repeating verbatim the statement from the Petition quoted at the beginning of this paragraph): “It would have been obvious to [one of ordinary skill in the art] in light of Frenier to apply the methods and compositions disclosed therein to ‘subterranean formation[s] having low permeability,’ including nano-darcy shale formations.” Harwell Decl. ¶ 169.9 Dr. Harwell provides no additional scientific or technical basis for this conclusory restatement of the Petition’s assertion, and we find Dr. Harwell’s testimony on this issue entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential) (denying institution and determining that testimony of a declarant that merely repeats, verbatim, conclusory assertions from a petition, without citing additional supporting evidence or providing technical reasoning to support the testimony, is entitled to little weight), cited at Prelim. Resp. 28–29 (“The Harwell Declaration repeats the same conclusory arguments presented in the petition without further evidence or 8 Page 18 of the Petition quotes column 1, lines 6–9 and column 1, lines 39–54 of Frenier. 9 Paragraphs 167–169 of the Harwell Declaration ostensibly address “Ground II: Claims 1–13 are obvious under 35 U.S.C. § 103(a) over Frenier alone and/or in combination with Reyes.” See Harwell Decl. pp. 40–41. In the discussion of “Ground I: Claims 1, 2, 4, 5, 7, and 13 are Anticipated by Frenier,” however, paragraphs 75–77 include the same or substantially similar statements from Dr. Harwell. Thus, the analysis would be the same even if Petitioner had cited paragraphs 75–77. explanation.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). This inadequate showing as to a requirement in limitations 1[b] and 1[c] reveals a lack of compelling merits.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 10. Petitioner “does not fully concur” with this definition of one of ordinary skill in the art but “is prepared to adopt” the definition for this proceeding. Id. Patent Owner “adopts” Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record in this proceeding, including the prior art. Prelim. Resp. 10; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt, and apply below, the definition proposed by Petitioner.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,944,843 - Axonics, Inc. v. Medtronic, Inc.No claims unpatentablePTAB · May 30, 2024 · IPR2020-00712 · APJ James A Tartal · IPR · Remand
Claims 3–6, 9–12, and 15–18 were not proven unpatentable because the petitioner failed to show the required two inputs in the asserted prior art.
RulingsRemand decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“The Specification of the ’148 patent states that “an alignment measurement may be made by measuring a value, e.g., current or voltage, associated with, e.g., proportional to, the current passing through [the] rechargeable power source.” Id. at 21:3–6. We therefore find that the Specification expressly identifies “current or voltage” as examples of “a value.” Id. In the FWD, we stated that “[a]lthough the ’148 patent makes clear that ‘a value’ may include, for example ‘voltage,’ we agree with Patent Owner that the two independent limitations should be construed such that the Value Limitation does not render superfluous the Signal Limitation or the Measured Voltage Limitation.” FWD 26. We further determined that “the Value Limitation and the Signal Limitation, as well as the Value Limitation and the Measured Voltage Limitation both require two separate inputs to the external power source.” Id. That determination is not at issue here. See Axonics, 75 F.4th at 1379–80 (stating that Petitioner did “not argue the Board erred in adopting the two-input claim construction”). 2. Additional Claim Terms We find no additional claim term requires express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (citation omitted). Petitioner contends that a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in electrical the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 8. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 4–5 (citing Ex. 2002 ¶¶ 21–22). Our analysis here, as in the FWD, does not turn on which of the Parties’ competing definitions of ordinary skill is applied. See FWD 16. Moreover, the appropriate level of ordinary skill is not in dispute on remand. Consistent with the FWD and the Decision on Institution, we apply the level of ordinary skill in the art proposed by Petitioner. See Inst. Dec. 11 (stating that “the ’148 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references . . . is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner” (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001))); FWD 16.” slip op. at 18
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“By contrast, in his Rebuttal Declaration, Dr. Mihran disputes Dr. Panescu’s new description of the operation of Schulman, noting that the current through R9 is not increased as a result of the current regulator R8/Q7 turning on, but that “[i]nstead, it is the increase in current through R9 in excess of the desired 40 mA operating current that causes the current regulator R8/Q7 to turn on, which acts to shunt this excess current through Q7, thereby diverting it away from the battery to maintain the desired operating condition during charging.” Ex. 2010 ¶ 6 n.3 (citing Ex. 1005, 5:2–7, 5:15–38, 9:57–68). We credit the testimony of Dr. Mihran, as supported by the cited portions of Schulman, over the unsupported testimony of Dr. Panescu in regard to how Schulman operates to measure current at R9. See id. However, whether Schulman discloses automatically varying the output power of the external power source based on a value associated with current passing through the internal battery, as required by the Value Limitation, is not in dispute. Dr. Mihran, for example, states that “Schulman discloses that the sole input provided to the external power” slip op. at 34
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Patent Owner argues, and we agree, that the measured current through R9 is the only input to the external power source Schulman APO Sur-reply 14–15. Patent Owner further argues, and we further agree, that the voltage across output leads 51 and 52 of Schulman is not an input to the external power source separate from the measured current through R9 in Schulman. See APO Sur-reply 11–16 (citing, e.g., Ex. 1003 ¶ 75; Ex. 2002 ¶ 46; Ex. 1005, 6:35–38; Ex. 2010 ¶¶ 4–7). In support of Patent Owner, Dr. Mihran states that “[t]he voltage between nodes 51 and 52 is never provided to the external power source in Schulman.” Ex. 2010 ¶ 4. According to Dr. Mihran, “Schulman discloses that the sole input provided to the external power source that the external power source uses to automatically regulate its power output is the input that derives from the amount of current flowing through the current sampling resistor R9.” Id. ¶ 5 (emphasis omitted) (citing Ex. 1005, 4:45–53, 6:35–38; Ex. 2002 ¶ 46). Dr. Mihran further states as follows: My understanding of Dr. Panescu’s opinion is that he does not contend that the voltage between nodes 51 and 52 is ever sent to the external power source as an input, and instead simply asserts that if “the voltage across leads 51 and 52 exceeds a predetermined amount,” then the current through R9 increases, which in turn “causes the power supplied by the external power source to decrease.” (Ex. 1012 at ¶16.) This does not represent a separate input, however, because the input derived from the current flowing through the current sampling resistor R9 (i.e. the load modulation frequency of telemetry circuit 12, the components of which “form a free-running multivibrator”) is what Dr. Panescu also identifies as satisfying the first input, “a value associated with said current passing through said internal battery.” (Ex. 1012 at ¶14 (“when the current through the internal battery . . . increases above a predetermined target value, the current regulator turns on, increasing the current through current sampling resistor R9.”) operating conditions may influence the value” of the amount of current flowing through current sampling resistor R9, and the current through R9 is the “only value that is communicated to the external power source,” corresponding to a single input that “cannot satisfy both of the two inputs required by claims 3, 6, 9, 12, 15, and 18 of the ’148 patent.” Id. ¶ 6. Dr. Mihran further states as follows: I understand Dr. Panescu’s opinion to be that, because Schulman discloses that the current through R9 is used by the external charger to automatically vary its output, any “value” that influences the amount of current through resistor R9 is a “separate respective input[] used by the external power source as a basis for automatically varying its power output.” ([Ex. 1012 ¶14].) In other words, Dr. Panescu simply identifies a voltage across two points in the circuit that he claims affects the current through R9 and contends that that voltage satisfies one of the two required separate inputs based on its alleged indirect impact on the output of the external charger. This strained interpretation of the claims renders superfluous the two separate inputs to the external power source required by claims 3, 6, 9, 12, 15, and 18 of the ’148 patent: (1) “a value associated with said current passing through said internal battery” and (2) “a signal proportional to said current passing through said internal battery” (claims 3, 9, and 15) and “measured voltage associated with said current passing through said internal battery” (claims 6, 12, and 18). In any circuit, there may be multiple components (e.g., transistors, switches, diodes, etc.) that can influence the current through a particular resistor. For example, in Schulman the current drawn by the stimulation portion of the implant circuit will influence the amount of current through R9. Dr. Panescu’s interpretation that a voltage or current at these components represents a “separate input” in Schulman is incorrect, because the sole input that is telemetered back to the external charger is the input derived from the amount of current flowing through R9.” slip op. at 35
Patent outcomesUS 8,738,148 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,738,148 - Axonics, Inc. v. Medtronic, Inc.No claims unpatentablePTAB · May 30, 2024 · IPR2020-00680 · APJ James A Tartal · IPR · Remand
On remand, the Board determined that claims 1, 5, and 9 were not shown unpatentable as anticipated by Schulman, Fischell, or Baumann.
RulingsRemand decision- BurdenNot shown unpatentable
“consider for purposes of the FWD. We also consider Patent Owner’s Amended Sur-reply, as supported by the Rebuttal Declaration of Dr. Mihran, and the arguments and evidence advanced in the post remand briefs of the Parties. Based on the totality of the record in this case, we determine, for the reasons that follow, that Petitioner does not show by a preponderance of the evidence that any of claims 1, 5, or 9 is anticipated by Schulman, Fischell, or Baumann. A. Principles of Law A claim is anticipated if a single prior art reference either expressly or inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014) (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)).” slip op. at 17
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (citation omitted). of the invention “would have had at least a bachelor’s degree in electrical engineering or an equivalent as well as at least five years of experience in the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 7. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 5 (citing Ex. 2002 ¶¶ 21, 22). Our analysis here, as in the FWD, does not turn on which of the Parties’ competing definitions of ordinary skill is applied. See FWD 16. Moreover, the appropriate level of ordinary skill is not in dispute on remand. Consistent with the FWD and the Decision on Institution, we apply the level of ordinary skill in the art proposed by Petitioner. See Inst. Dec. 11–12 (stating that “the ’758 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner” (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001))); FWD 16.” slip op. at 17
- Expert testimonyPatent owner expert creditedPetitioner expert discountedOther
“By contrast, in his Rebuttal Declaration, Dr. Mihran disputes Dr. Panescu’s new description of the operation of Schulman, noting that the current through R9 is not increased as a result of the current regulator R8/Q7 turning on, but that “[i]nstead, it is the increase in current through R9 in excess of the desired 40 mA operating current that causes the current regulator R8/Q7 to turn on, which acts to shunt this excess current through Q7, thereby diverting it away from the battery to maintain the desired operating condition during charging.” Ex. 2010 ¶ 6 n.2 (citing Ex. 1005, 5:2–7, 5:15–38, 9:57–68). We credit the testimony of Dr. Mihran, as supported by the cited portions of Schulman, over the unsupported testimony of Dr. Panescu in regard to how Schulman operates to measure current at R9. See id. However, whether Schulman discloses automatically varying the output power of the external power source based on a measured current, as required by the challenged claims, is not in dispute. Dr. Mihran,” slip op. at 32
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We find that because it is largely unsupported and conclusory, the opinion of Dr. Panescu in his Supplemental Declaration that “Schulman teaches automatically varying the output power of the external power source based on a value, where the value is the voltage across the output leads 51 In his original declaration, Dr. Panescu made clear that, according to Schulman, the output of the external power source was lowered if the charging current, as measured at sampling resistor R9, “exceeds a maximum capacity,” not because of the voltage across output leads 51 and 52. See Ex. 1003 ¶ 127 (quoting Ex. 1005, 7:25–29). Petitioner does not allege that any measurement of voltage across output leads 51 and 52 in Schulman is conveyed to an external power source to automatically vary its power output. Instead, Petitioner’s argument is premised on the notion that if the voltage across leads 51 and 52 exceeds a predetermined amount, then it will affect the current sampled by resistor R9. We also find persuasive Dr. Mihran’s testimony that Petitioner’s strained interpretation renders the Value Limitation superfluous to the Measured Current Limitation because the voltage across leads 51 and 52 was not shown by Petitioner to be a separate input to the external power source. See Ex. 2010 ¶ 7 (explaining that “there may be multiple components (e.g., transistors, switches, diodes, etc.) that can influence the current through a particular resistor,” and that influencing the current measured at R9 does not constitute a separate input to the external charger from the measured current at R9). To be clear, we need not resolve whether the challenged claims require each separate input be separately conveyed to the external power source. Here, the burden to show anticipation is on Petitioner and Petitioner offers no persuasive evidence or explanation to establish by a preponderance of the evidence that a person of ordinary skill in the art would have understood the voltage across output leads 51 and 52 corresponds to “a value” based upon which the external power source “automatically” varies its power output, as required by the challenged claims. Nor does skill in the art would have understood the voltage across leads 51 and 52 in Schulman to be a separate input from the measured current at R9 when, at most, Petitioner alleges the voltage across leads 51 and 52 may, in certain circumstances, have some effect on the measured current at R9, itself. Thus, Petitioner does not show by a preponderance of the evidence that Schulman discloses to a person of ordinary skill in the art two separate inputs to the external power source, as Petitioner conceded is required by the Value Limitation and the Measured Current Limitation.” slip op. at 35
Patent outcomesUS 8,457,758 not shown unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 8,457,758 - Nespresso USA, Inc. v. K-Fee System GMHBNo claims unpatentablePTAB · Apr 10, 2024 · IPR2022-01574 · APJ James J Mayberry · IPR · Final written decision
Claims 1–13 were not shown unpatentable because the asserted combinations did not teach or render obvious the claimed groove entirely to the side of the chamfered mandrel.
RulingsFinal written decision- Skill levelSkill level board ownPatent owner expert discountedDecided for patent owner
“The Federal Circuit has made clear that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (emphasis added). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. The Federal Circuit reasons that “‘[a]dmitting testimony from a person . . . with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.’ . . . That testimony would ‘amount[ ] to nothing more than advocacy from the witness stand.’” Id. (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)). possesses at least the level of ordinary skill in the art. Our level of ordinary skill in the art requires a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Patent Owner does not persuasively account for how Dr. Howle’s experience, extensive as it may be, includes five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Cf. Kyocera, 22 F.4th at 1376 (“Dr. Pratt has advanced degrees in engineering and extensive experience in the design and manufacture of fastener driving tools. But he lacks experience in power nailer design.”).” slip op. at 21
- Expert testimonyPatent owner expert discountedDecided for petitioner
“The Federal Circuit has made clear that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (emphasis added). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. The Federal Circuit reasons that “‘[a]dmitting testimony from a person . . . with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.’ . . . That testimony would ‘amount[ ] to nothing more than advocacy from the witness stand.’” Id. (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)). possesses at least the level of ordinary skill in the art. Our level of ordinary skill in the art requires a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Patent Owner does not persuasively account for how Dr. Howle’s experience, extensive as it may be, includes five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Cf. Kyocera, 22 F.4th at 1376 (“Dr. Pratt has advanced degrees in engineering and extensive experience in the design and manufacture of fastener driving tools. But he lacks experience in power nailer design.”).” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on the information above, we conclude that the limitation “a groove that is laterally offset from the chamfered mandrel” requires the groove to be entirely to the side of any part of the mandrel. This construction is consistent with the words of the claim—the claim states that the groove is laterally offset from, or to the side of, the chamfered mandrel, not merely offset from a portion of or the centerline of the mandrel. This construction is also consistent with the one embodiment describing the relationship between the mandrel and groove containing the seal, which depicts the groove entirely to the side of the chamfered mandrel. We do not accept Mr. Jobin’s testimony that laterally offset is determined relative to the centerline of an object. Neither the intrinsic record nor other extrinsic evidence provides support for Mr. Jobin identifying the centerline of an object as the reference point for determining if a point is laterally offset from the object.” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We do not agree with Petitioner that Yoakim teaches a groove that is laterally offset from the chamfered mandrel. As we indicated in our claim construction section, we construe the claim term to require the groove to be entirely to the side of any part of the mandrel. We agree with Patent Owner that, as depicted in Yoakim’s Figure 35, the alleged groove is not entirely to the side of any part of the mandrel. See Pet. 69; see also Pet. Reply 19 (showing the alleged groove, in red, including a portion over the chamfered mandrel); PO Resp. 55 (same). Even if Petitioner’s position is that all of the groove must be to the side of the centerline of the mandrel, Petitioner fails to prove that Yoakim teaches such a structure. As seen in Petitioner’s illustration at page 19 of Petitioner’s Reply (reproduced above), a small portion of the groove (which Petition colorizes in red) is to the left of the centerline (shown in green). See Pet. Reply 19.” slip op. at 40
Patent outcomesUS 11,254,491 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,254,491 - Axonics, Inc. v. Medtronic, Inc.No claims unpatentablePTAB · Mar 21, 2024 · IPR2020-00715 · APJ Brent M Dougal · IPR · Remand
On remand, the majority determined claims 1, 2, 5, 7, 13–15, and 18 were not shown unpatentable under either of two §103 grounds, because the asserted combinations lacked sufficient support.
RulingsRemand decision- Skill levelSkill level board ownOther
“In view of the above, and the evidence of record, we find on remand that the relevant art is medical leads. We previously found that the level of ordinary skill in the art requires “experience researching and developing medical leads for sacral neuromodulation.” FWD 16. Consistent with the Federal Circuit decision and our finding of the relevant art, the experience of one of ordinary skill is not limited to “sacral neuromodulation.” Rather, the level of ordinary skill in the art requires experience in the relevant art, which is medical leads.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction In an inter partes review, we construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). No terms require express construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Gerber indeed suggests anchoring its lead by fibrosis. Namely, Gerber discloses: “Yet another anchoring mechanism 50 is to allow the medical lead 10 to fibrose in naturally using the human body’s natural reaction to a foreign body or healing.” Ex. 1010, 4:27–30. Moreover, there is no dispute that tines secure via fibrosis. Petitioner, however, acknowledges that any foreign object introduced into the body will cause fibrosis. Tr. 12:8– 13. Nonetheless, Petitioner maintains that Gerber’s disclosure of securing its lead by fibrosis would have led a POSITA to choose tines because tines were a leading candidate among the devices that anchor by fibrosis. Pet. 51 (citing Ex. 1003 ¶ 115) (emphasis added). Petitioner’s argument relies on Mr. Pless’s opinion that tines were a leading candidate for securement via fibrosis, and Mr. Pless’s opinion is based his review of the conventional uses of tines. Tr. 12:18–24 (Petitioner explaining that pages 13–16 of Mr. Pless’s Declaration provide support for his opinion that tines were most commonly used for fixation via fibrosis). According to Mr. Pless, “[b]efore 2001, tines were the most commonly used passive fixation, especially due to the predominant usage of tines in the cardiac space. Tines help to anchor the lead immediately after implantation by engaging with the body tissue, and then by fibrosis.” Ex. 1003, 15–16. Gerber’s lead, however, is for sacral nerve stimulation and is implanted in the sacral area via an open surgical procedure. Ex. 1010, 1:7–15, 5:32–39. We find credible Dr. Siegel’s testimony that Gerber’s device is implanted via an open surgical procedure in which the periosteum and soft tissues surrounding the implantation site are dissected, compromising their structural integrity and rendering tines, which initially anchor by engaging body tissue, ineffective. Thus, despite the prevalent use of tines in the cardiac space to secure leads by engaging body tissue and then by fibrosis, Petitioner has not persuaded us that Gerber’s disclosure of securing its lead by fibrosis would have led a POSITA to replace Gerber’s anchoring mechanism with tines. Regarding Petitioner’s reasoning for positioning tines according to Akerström’s arrangement, Lindegren attributes a manufacturing preference to tines integrally formed and evenly spaced on rings, not proximally extending tines that are adapted to be folded inwardly against the lead body without overlap. Ex. 1011, 5:17–20 (“From the manufacturing point of view, having the projections devised as an integral part of a one-piece ring-shaped means and evenly distributed around the circumference of the ring-shaped means, should be preferable.”). Moreover, according to Petitioner, a smaller profile is suited to percutaneous delivery (Pet. 51), but Gerber’s lead is implanted via an open surgical procedure (Ex. 1010, 1:7–15, 5:32–39). Accordingly, Petitioner has not persuaded us that a POSITA would have had a reason to include, in Gerber’s lead, Hauser’s tines situated according to Akerström’s arrangement.” slip op. at 24
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We credit Dr. Slavin’s testimony that the trigeminal cistern is a fluid- filled cavity that does not contain tissue for the tines to “engage” with, or be damaged by. Ex. 2029 ¶ 54–55. Dr. Slavin testifies that he is “a board certified neurosurgeon and [has] been in active clinical practice that includes all aspects of neuromodulation, spinal surgery and surgery for pain, including implantation of electrical stimulation devices, surgery on vertebral column including sacrum, trigeminal nerve surgery and so forth.” Ex. 2029 ¶ 5. Thus, Dr. Slavin has extensive knowledge of the areas around the trigeminal nerve. In contrast, Mr. Pless, an electrical engineer and product designer for electrical stimulations device in various areas of the body (Ex. 1003 ¶¶ 3–16), testifies that he believes there is tissue in the area of implantation in Young, but states “I'm not exactly sure what that tissue would be.” Ex. 2026, 123:21–23. Thus, we do not credit Mr. Pless’s testimony that Young’s tines can be damaged because of the body tissue 16 Hauser, discussed in the next ground, teaches tines on the distal most end which impliedly would be advanced out of the introducer, before advancement and placement of the electrode. Ex. 1013, 4:1–3, 4:26–51, Figs. 1, 6. present in the area of implantation of Young. As noted previously, the Petition relies exclusively on Young for teaching this method step of claims 1 and 14.” slip op. at 16
Patent outcomesUS 8,036,756 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,036,756 - Axonics, Inc. v. Medtronic, Inc.Some claims unpatentablePTAB · Mar 21, 2024 · IPR2020-00679 · APJ Brent M Dougal · IPR · Remand
On remand, claims 1, 2, 4, 7, 10–12, 14, 22, and 23 were held unpatentable over Young, Gerber, and Lindegren; claims 18–21 and 24 were not shown unpatentable.
RulingsRemand decision- RemandOther
“First, the Federal Circuit stated that “[o]nly the Board’s findings about the combination of Young and Gerber are presented for review in this appeal.” Axonics, 73 F.4th at 954. Thus, the Federal Circuit does not address our prior determination that Petitioner has not shown, by a preponderance of the evidence, that claims 1, 2, 4, 7, 10–12, 14, and 18–24 are unpatentable over the combination of Gerber, Hauser, and Akerström. See FWD 38–59. Second, the Federal Circuit summarized their holding and provided guidance as follows: First, even if the Board was correct to treat the Medtronic patents at issue as limited in the problem they address to the sacral-nerve context, the Board committed a fundamental legal error in confining the motivation inquiry to whether a motivation would exist to make the proposed combination for use in the Young-specific trigeminal-nerve context—to which the Medtronic patents are not limited. Second, the Board was incorrect in its view that “the relevant art is medical leads specifically for sacral neuromodulation,” J.A. 13, as the Medtronic patents’ claims are not limited to the sacral-nerve context and the shared specification, properly read, is not so limited either. Axonics, 73 F.4th at 957 (emphases added). We now reevaluate our findings and determinations involving the grounds with both Young and Gerber.” slip op. at 4
- Skill levelSkill level board ownDecided for patent owner
“neuromodulation.” FWD 15. Consistent with the Federal Circuit decision and our finding of the relevant art, the experience of one of ordinary skill is not limited to “sacral neuromodulation.” Rather, the level of ordinary skill in the art requires experience in the relevant art, which is medical leads. Petitioner argues that one of ordinary skill in the art should not be limited to the art of “implantable medical leads,” but should include the broader area of “active, implantable medical devices.” Pet. PR 4. Petitioner explains that this is because this broader area is “not . . . limited to [the] constraints of specific anatomies,” consistent with the Federal Circuit’s decision. Id. However, this is also true for the relevant art of medical leads. A person of ordinary skill in the art of medical leads will have knowledge of specific anatomies, but knowledge of any one particular anatomy is not required. We see no reason to expand the required experience to areas related to, but outside of, the relevant field. As noted above, Petitioner essentially agrees with what we have found to be the relevant field. Id.; Pet. PR Reply 4. However, Petitioner does not provide any convincing argument explaining why one of ordinary skill in the art should not be required to have skill in the defined art. We also note that Petitioner does not argue that such a finding would impact any aspect of our decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“No terms require express construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“between the multiple electrodes and the tines. Dec. 35 (“Young discloses multiple active sites near the tip, not at the tip or distal to the tines”). Young is in fact silent on this relationship. Young states that “[t]he electrode could be improved to provide multiple active stimulation sites near the tip. [This could allow treatment of] . . . patients with pain in all three trigeminal divisions.” Ex. 1010, 10. At the same time, Young shows two tine elements separate and distal of the electrode in Figure 1. Further, Petitioner relies on Gerber for teaching multiple electrodes at the distal end and distal to the anchoring mechanism. See Pet. 23–24. We find that Gerber teaches or at least suggests multiple electrodes distal to the anchoring devices. See Ex. 1012, 3:39–48, 4:13–52, 5:33–50, Figs. 1–3, 6. Still further, Mr. Pless’s testimony is uncontroverted that “it had been a common practice to add electrodes at the distal tip of the lead for percutaneous implantations before 2001.” Ex. 1003 ¶ 90. In view of the teachings of Young, Gerber, and the testimony of Mr. Pless, Petitioner has shown that one of skill in the art would have been motivated to add electrodes to the distal end of Young, distal to the tines.” slip op. at 20
Patent outcomesUS 8,626,314 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,626,314 - Arthrex, Inc. / Acumed LLC v. Jeffrey Gelfand, M.D.All claims unpatentablePTAB · Mar 11, 2024 · IPR2023-00014 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Clavicula, Hardy, and Thornes; the Board did not reach the alternative Deffenbaugh grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art at the time of the alleged invention would have had “(1) at least an MD or equivalent degree; and (2) at least two years’ experience (i) designing, developing, or testing implantable medical devices, such as bone fixation devices, or (ii) performing surgeries with implantable medical devices, such as bone fixation devices.” Pet. 18– 19 (citing McKee Decl. ¶ 31). Patent Owner counters by stating that one of ordinary skill in the art “would have an M.D. or similar degree and several years of either clinical experience performing surgery on the shoulder and clavicle or designing, developing, and testing such devices.” PO Resp. 22 (citing Thal Decl. ¶ 31). Patent Owner adds that “[t]his definition is largely consistent with the definition provided by Dr. McKee in his declaration ([McKee Decl.] ¶ 31), and the arguments below would not change if Dr. McKee’s definition were applied to this case.” Id. (citing Thal Decl. ¶ 34). As noted in the Decision on Institution, Petitioner’s proposed definition appears consistent with the record, including the prior art. See Dec. Inst. 14 (citing In re GPAC Inc., 57 F.3d at 1579). Moreover, we agree with Patent Owner that the differences in the two proposed levels of ordinary skill in the art are minor. For these reasons, and because Patent Owner acknowledges that its arguments would not change if Petitioner’s proposed level of ordinary skill were applied, in the analysis below, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution, as proposed by Petitioner. Further, the analysis would be the same under Patent Owner’s proposed level.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We need not construe explicitly any of the claim language discussed in this section or any other claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))); see also Pet. Reply 1 (stating that “the Board need not address the parties’ proposed claim constructions”).” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“ordinary skill in the art from the proposed combination because the Lim article had only a small patient pool. Pet. Reply 6. As noted above, the Lim article involved eight patients total, and only two of the eight had a clavicle plate as part of their procedures. See Ex. 2014. We are persuaded by Petitioner that one of ordinary skill in the art would not have drawn a strong conclusion from the “failures” in a study like the Lim article with such a small patient pool. See Pet. Reply 6. This conclusion is supported by the deposition testimony of Dr. Thal, highlighted by Petitioner, in which he is hesitant to draw any “firm conclusions” from studies with less than ten patients. See Ex. 1033, 96:6–97:20, cited at Pet. Reply 6; see also Ex. 1033, 130:7–9 (discussing how the Lim article was not “conclusive evidence that it wasn’t successful”), 132:3–14 (discussing how, with “two patients” “[i]t’s hard to draw, to make a conclusion”), 97:21–98:14 (discussing how a study with failure for four patients would not lead to a conclusion that the technique used was “a failure itself”). In the Sur-reply, Patent Owner does not seek to reframe Dr. Thal’s testimony in any way, but rather argues that if the Lim article should not be relied upon due to its small patient pool, Petitioner should not be able to rely on Exhibits 1025 through 1028, which allegedly involve similarly small patient pools. See PO Sur-reply 7. Although no motion to exclude is pending, we note that we do not rely on Exhibits 1025 through 1028 in this Decision. Based on the small patient pool in the Lim article, we are persuaded that one of ordinary skill in the art would not have viewed the Lim article as dissuading one of ordinary skill in the art from the proposed combination.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are persuaded by the testimony of Dr. McKee (McKee Decl. ¶ 106)—quoted and relied upon by the Patent Owner for this issue (PO Surreply 3–4)—that a recessed washer such as that taught in Hardy, and present in the proposed combination, would provide the benefits stated and would thus represent an improvement over the procedures in the Lim article. See McKee Decl. ¶¶ 106, 122 (providing similar reasoning for this proposed ground), cited at Pet. 58. Accordingly, we agree with Petitioner that the added feature of the recessed washers in the proposed combination—not present in the Lim article device—weakens Patent Owner’s argument that the Lim article would have dissuaded one of ordinary skill in the art from the proposed combination. Further, Petitioner points out that, although the Lim article did have a “50% fixation failure rate” (Ex. 2014 at 219), the authors stated that the “concept of this fixation technique is good” and that there are “many attractive potential advantages of using the Tightrope system.” Ex. 2014 at 220, quoted at Pet. Reply 6–7. Indeed, the final takeaway from the Lim article is that “further biomechanical analysis of this fixation device is required to evaluate and address the potential cause” of its failures. Ex. 2014 at 220. We are persuaded by Petitioner’s view that the Lim article—which purports to be the first article reporting on the use of “Tightrope fixation in [AC joint] dislocations” (id.)—included certain failures but would, in totality, be viewed as indicating the potential for future development rather than a sign that the disclosed technique should be jettisoned in its entirety. See Pet Reply 6–8. Directly supporting this conclusion, Dr. Thal testifies that the Lim article “tells us that there is room for further innovation to get a more predictable result in treatment of this challenging problem.” Ex. 1033, 135:22–136:4, quoted at Pet. Reply 7, 10–11. For these reasons, the record does not support Patent Owner’s argument that the Lim article would have dissuaded one of ordinary skill in the art from the proposed combination because there would not have been a reasonable expectation of success. Third, after summarizing a portion of Petitioner’s reasons to combine Clavicula, Hardy, and Thornes, Patent Owner argues that “[t]his combination is obvious only in hindsight and only after it was disclosed by Dr. Gelfand, who described for the first time in one place” certain alleged requirements of the claimed invention. PO Resp. 51–52 (citing Thal Decl. ¶ 95). For the reasons discussed above, however, the record does not support Patent Owner’s argument that the Lim article shows there would not have been a reasonable expectation of success in the proposed combination. Moreover, we determine that the record, including the testimony of Dr. McKee, supports the motivation to combine Clavicula, Hardy, and Thornes as proposed by Petitioner and that there would have been a reasonable expectation of success in that combination. See Pet. 54–61 (citing McKee Decl. ¶¶ 113–128). Thus, we do not agree with Patent Owner’s generalized assertion of “hindsight.” PO Resp. 51; see In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (viewing an “impermissible hindsight” argument as “essentially a repackaging of the argument that there was insufficient evidence of a motivation to combine the references”). Further, as discussed in the context of the first argument above, that Dr. Gelfand may have “described for the first time in one place” the claimed invention does not necessarily undermine a ground based on obviousness. See Bradium Techs., 923 F.3d at 1050.” slip op. at 37
Patent outcomesUS 9,149,312 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,149,312 - Unified Patents, LLC v. Rosen Technologies LLCAll claims unpatentablePTAB · Feb 28, 2024 · IPR2022-01402 · APJ Jason W Melvin · IPR · Final written decision
Claims 1, 3, 4, 14, and 16–20 are unpatentable as obvious over Geiwitz; claims 19 and 20 are also unpatentable over Geiwitz and Cardio Manual.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF SKILL IN THE ART Petitioner asserts skilled artisans “would have had at least a Bachelor’s degree in Electrical Engineering or a similar degree and at least two years of professional experience,” and would have been “familiar with the circuitry and operation of programmable, touchscreen thermostats having liquid crystal displays.” Pet. 7 (citing Ex. 1003 ¶ 48). Patent Owner does not dispute that definition, and offers that skilled artisans “would have had a bachelor’s degree in electrical engineering or a related field, and at least two years of experience in working with HVAC systems or thermostat systems.” PO Resp. 13–14. We perceive no distinction between how the two definitions might affect our analysis and the parties do not identify any. We adopt Petitioner’s definition, as it is supported by expert testimony.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“the touch screen display with graphics (alphanumeric characters and/or icons) on or closely associated with the first virtual button.” Id. at 3:53–56. By using a disjunctive, “or,” the Specification establishes that the legend (e.g., alphanumeric characters) need not be located on the button to which it corresponds. The summary expressly describes that a legend may instead be “closely associated with” the button to which it corresponds. Patent Owner contends that the passage addresses only an “image,” not a “legend.” PO Resp. 8–9. We agree with Petitioner, however, that the “image” in the summary’s passage refers to an image representative of the button, which is separate from “graphics (alphanumeric characters and/or icons)” that are displayed “with” the image. See Pet. Reply 8–9. Thus, the relevant question about the summary’s passage is whether “graphics” corresponds to the claimed “legend.” The specification as a whole shows that a legend refers to graphics (characters or icons) displayed with a virtual button. E.g., Ex. 1001, 8:22–26 (indicating that Figure 8 illustrates “a change of the legend associated with virtual button 116”), 9:29–30 (referring to “legends which may appear with virtual button 116”), 10:37–42 (indicating that Figure 12 illustrates a change in the “legend appearing at button 154”), 10:48–58 (same, as to button 158), 11:8–11 (indicating Figure 13 illustrates changes to button 172’s “numerical legend”). Each time the specification refers to a legend, it does so in connection with alphanumeric characters displayed with the button. Thus, we read the summary’s description of “graphics” as referring to a legend, notwithstanding that it does not expressly do so. With that understanding, the specification directly contradicts Patent Owner’s proposed construction, by disclosing that a legend displayed with a button’s image may be either on or closely associated with the button. Accordingly, we decline to adopt Patent Owner’s asserted construction. The specification’s description somewhat narrows the claim language, discussed above, which does not restrict the legend’s position. Thus, we construe a “legend” as content displayed on or closely associated with a virtual button.” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for petitioner
“2001, filing date of its provision application (US 60/339,511 (Ex. 1005)). Pet. 14. To rely on Geiwitz’s Provisional-application date, Petitioner must show that the Provisional supports at least one of Geiwitz’s claims. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–81 (Fed. Cir. 2015). Petitioner provides a chart indicating where Geiwitz’s Provisional application supports Geiwitz’s claim 1. Pet. 14–15. Patent Owner does not contest Petitioner’s showing, and has therefore forfeited that argument. See In re NuVasive, Inc., 842 F.3d 1376, 1380–81 (Fed. Cir. 2016). We determine that Petitioner has made an adequate showing. Geiwitz’s Provisional describes its system components, including a “System Back Plane” including a “Platform,” which is depicted in Figure 383. Ex. 1005, 7 (“Platform (figure 383)”), 945 (Fig. 383). The Platform includes “Processor module header ports,” which are depicted in Figures 426–431. Id. at 7 (“Processor module header ports (figure 426 – 431)”). The system components further include “System Expansion Modules,” which include a “Processor Module,” depicted in Figures 450– 455. Id. at 9 (“Processor Module (figure 450 – 455)”). The Provisional describes that the Processor Module plugs into the platform and provides “processing power.” Id. at 170. The Provisional’s Figure 383, depicting the “Platform,” indicates a section labeled “SMART CARD.” Id. at 945 (Fig. 383). Figure 428, depicting part of the Processor module header ports, is labeled “Smart Card Connector.” Id. at 1001 (Fig. 428). And Figure 450, depicting the “Processor Module,” shows a circuit board labeled “Smart Systems Technologies.” Id. at 1031 (Fig. 450). In sum, those disclosures in Geiwitz’s Provisional support a claim to a smart card comprising a programmable microprocessor. Thus, Geiwitz is entitled to an effective date as of its Provisional application.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As discussed above, we do not construe “legend” to require the legend appear on a button; instead, the claims encompass a legend that is “closely associated with” a button, as described in the specification. See supra at 7– 10, § II.B. Geiwitz’s disclosures satisfy the claim language as construed, because the asserted legend is indicative of a first control function of the thermostat and appears closely associated with the Mode button. Patent Owner does not otherwise contest Petitioner’s contentions for claim 1. We have reviewed Petitioner’s contentions and conclude they demonstrate the subject matter of claim 1 is obvious over Geiwitz. In that conclusion, we adopt Petitioner’s reasoning as our own. Pet. 13–60. Patent Owner raises the same argument for claims 3, 16, and 19 (PO Resp. 19–21), and we reach the same conclusion as to those claims for the same reasons discussed for claim 1. See Pet. 61–62, 66–76. For the dependent claims, Patent Owner relies on its asserted deficiencies regarding Petitioner’s showing discussed above. PO Resp. 21. As discussed, we do not agree with those asserted deficiencies. We have reviewed Petitioner’s contentions and conclude they demonstrate the subject matter of claims 3, 4, 14, 17, 18, and 20 would have been obvious. In that conclusion, we adopt Petitioner’s reasoning as our own. Pet. 61–66, 71, 76.” slip op. at 13
Patent outcomesUS 7,156,318 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,156,318 - Unified Patents, LLC v. Ak Meeting IP LLCAll claims unpatentablePTAB · Jan 5, 2024 · IPR2022-01142 · APJ Ryan H Flax · IPR · Final written decision
Claims 1–14 are unpatentable: claims 1 and 8 are anticipated by and obvious over Roy; claims 1–14 are obvious over Simonoff and Naef; and the listed claims are anticipated by and obvious over Chang.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) would have been a person having, as of the priority date of the ’124 Patent: (1) at least an undergraduate degree in computer science or closely-related field, or similar advanced post-graduate education; and (2) 1–2 years of experience related to multi-user collaboration software. Pet. 7 (citing Ex. 1003 ¶¶ 28–30).10 Patent Owner does not address the level of ordinary skill in the art in its Response, but Patent Owner previously stated in its Preliminary Response that it “adopt[s] Petitioner’s proposed level of ordinary skill in the art because it comports with the technology and claims of the ’124 Patent as well as the asserted prior art.” See generally Resp.; Prelim. Resp. 5. We accept Petitioner’s proposed and unopposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’124 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[]” evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We conclude, in agreement with Petitioner, that Mr. Landers is not evidenced to have ordinary skill in the art, as such has been defined above in Section II.B of this Decision, because he appears to have neither the requisite education (he is not evidenced to have a degree in computer science or a closely related field) nor experience (he is not evidenced to have experience in multi-user collaboration software). See Ex. 2002 ¶¶ 5–7, Attachment A; see also Hr’g Tr. 23:5–25:2 (Patent Owner, given the opportunity to identify any evidence of record supporting that Mr. Landers has ordinary skill in the art, identified none). There is no argument by Patent Owner to the contrary. For the reasons above, we give no weight to the testimony presented in the Declarations of Mr. Sunatori and Mr. Landers as to the claim construction, anticipation, and obviousness issues discussed below. D.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states, “no construction is necessary, as the claims are obvious under any reasonable construction.” Pet. 7. This statement aligns with the testimony of Dr. Terveen. Ex. 1003 ¶ 24 (“Counsel has not instructed me to apply a construction of the claims notwithstanding their ordinary meaning. Therefore, I have applied the meaning of the claim terms of the Challenged Claims that is generally consistent with their ordinary and customary meaning, as a person having ordinary skill in the art would have understood them in the context of the ’124 Patent at the time of the alleged invention.”). Moreover, Petitioner again stated at the final hearing that, “there are no claim construction disputes, at least none explicitly.” Hr’g Tr. 11:21–24. Similarly, Patent Owner states that “[n]o formal claim constructions are necessary because ‘claim terms need only be construed to the extent necessary to resolve the controversy.’” Resp. 4 (quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Therefore, we also do not expressly construe any claim language. slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the evidence of record, we find that the annotated Roy Figure 4B, above, shows how Roy teaches: (1) user input at a client computer, the user input representing content to be shared, such as game plays, and generating messages defining that content, (2) the content being sent to a server, (3) and the server then outputting related messages to all the networked client computers (including the originating computer) so that (4) shared content (e.g., the game play) is displayed over common content (e.g., a game field) at all networked computers (including the originating computer). The above cited portions of Roy, as explained by Dr. Terveen, disclose a central server architecture for the networking of, and sharing common and user-generated content amongst, client computers, and the inherent latency involved in transmission of messages over such an architecture. See Pet. 10–23; Ex. 1001, 1:60–67, 47:44–48, 49:2–7; Ex. 1003 ¶¶ 47–60; Ex. 1005, Abstract, 1:26–48, 1:53–56, 2:1–6, 3:16–56, 3:66–4:1, 4:6–29, 4:44–54, 5:17–6:14, 7:50–52, Figs. 1, 4B, 5A, 5B; Ex. 1020; Ex. 1021. Moreover, to the extent any claim element is not expressly disclosed in Roy, Petitioner has shown that it would have been obvious because one of ordinary skill in the art would understand that displaying shared content over common content on networked computers, where users are collaborating or playing a game, where changes are made to the common view efficiently so that only changes are messaged as rendering commands rather than re-rendering the entire “game world” would provide the benefit of preserving bandwidth consumption. Pet. 20–21; Ex. 1003 ¶ 58.” slip op. at 47
Patent outcomesUS 10,963,124 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,963,124
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.